Passionate about IP! Since June 2003 the IPKat weblog has covered copyright, patent, trade mark, info-tech and privacy/confidentiality issues from a mainly UK and European perspective. The team is David Brophy, Birgit Clark, Merpel, Jeremy Phillips, Eleonora Rosati, Darren Smyth, Annsley Merelle Ward and Neil J. Wilkof. You're welcome to read, post comments and participate in our community. You can email the Kats here

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Wednesday, 12 September 2007

Case T-140/06Philip Morris Products v OHIM (Shape of a packet of cigarettes): this decision is in French alone, possibly on account of the perception that the French have so great an affection for smoking that only they will be interested in it. To cut a long story short, the applied-for sign (right) appears to lack distinctive character. As the Board of Appeal said,

Case T-141/06Glaverbel v OHIM (texture of glass surface): in the IPKat's opinion a glass surface such as that depicted on the left is unlikely to be regarded as a prime subject for trade mark registration. Apart from the fact it can be said to be functional, consumers might find it difficult to imagine that this particular configuration of texture was sending out a message as to the trade origin of the glass.

Who are the relevant consumers? Glaverbel maintained that they were trade purchasers, a specialised group who were familiar with the sign. The CFI did not feel that this class of persons could be so limited:

"25 In the circumstances of this case, a final consumer who entrusts to a professional in the building industry work requiring the use of patterned glass normally chooses the design to be used. In so far as a design such as the one which makes up the mark applied for remains visible in the final product and is thus capable of having an aesthetic function, the final consumer has an interest in being involved in choosing it. Although it is true that he is helped by a professional, the fact remains that the consumer is confronted with the various designs that are available by way of a catalogue or samples, and that he chooses from them the one which suits him best. Therefore, the choice of the specific design of the glass sheet which will be used is determined, to a significant extent, by the final consumer, notwithstanding the fact that the sheet will be bought by the professional employed to carry out the work".

Glaverbel's argument that this textured surface had acquired distinctiveness among relevant consumers on account of its use as a trade mark did not appear to be supported by the evidence either, according to the CFI. Additionally, since the sign applied for was inherently non-distinctive throughout the territory of the European Union, it was necessary for evidence of distinctiveness acquired through use to be furnished for all EU territories of the EU - not just two-thirds of the Member States at the date the application was filed.

Case T‑164/06, ColArt/Americas, Inc v OHIM: ColArt applied to register the word mark BASICS in Class 2 for various paints and artists' materials. The application was rejected under on the ground that BASICS would not distinguish the goods at issue in view of the fact that its meaning may serve in trade to describe "the basic goods, that is the fundamental, most important or most commonly used goods which an artist or decorator may require". ColArt appealed to the Board of Appeal, contending that the mark for which registration had been sought, being complex and, in the final analysis, vague and possessing a minimum degree of imagination, was not descriptive but had a distinctive character, and that the mark had acquired distinctive character by reason of its use.

The Fourth Board of Appeal dismissed this appeal: ‘basics’ was an English word, the relevant public was primarily made up of persons established in the Community who were native English speakers or had sufficient knowledge of the English language. For this public the word ‘basics’ referred to basic goods, that is, the most important goods, elementary goods or the goods most commonly used by artists. Nor was there any probative evidence of distinctiveness acquired through use. ColArt appealed. The CFI, affirming the earlier decisions, dismissed the appeal. Says the IPKat, ColArt's own house mark (above, right) is so pretty and very distinctive: what a shame that the company feels the need to colonise a basic word such as 'basic', when it has this lovely mark at its disposal.

Case T‑291/03, Consorzio per la tutela del formaggio Grana Padano, supported by the Italian Republic v OHIM, Biraghi SpA. In February 1998 Biraghi SpA applied to register the word mark GRANA BIRAGHI as a Community trade mark in Class 29 for cheese and various dairy products. The mark was registered in June 1999. Later that year the Consorzio applied to OHIM for a declaration that the Community trade mark GRANA BIRAGHI was invalid, being contrary to the protection of the designation of origin ‘grana padano’ and the earlier national and international marks GRANA and GRANA PADANO. The Cancellation Division allowed Consorzio’s application for a declaration of invalidity. Biraghi appealed on the ground that the term 'grana' was generic and descriptive. The First Board of Appeal agreed, annulling the Cancellation Division’s decision and rejecting the application for a declaration that the Community trade mark GRANA BIRAGHI was invalid: since the term was generic, the registration of 'grana padano' as a protected designation of origin did not bar registration of the words GRANA BIRAGHI as a Community trade mark.

The Consorzio appealed to the CFI, which annulled the Board of Appeal's decision. In the view of the CFI, the term 'grana' had indeed been used in a variety of contexts, in relation to a variety of products - but that did not make it generic. In its detailed analysis of Italian law, the CFI said this:

"73 Among those factors, mention must be made, above all, of the legislative position as regards the protection of the name ‘grana padano’ in Italy and the historical development thereof.

74 ... the first legislative recognition of the name ‘grana’ dates back to Regio Decreto Legge No 1177, ... GURI No 179 of 8 August 1938). In that decree, which lays down the minimum fat content in the different Italian cheeses, reference is made to grana parmigiano-reggiano, grana lodigiano, grana emiliano, grana lombardo and grana veneto. The Decree shows that grana was produced in a number of areas in the Padanian Valley, near Parma, Reggio Emilia and Lodi, and in Emilia, Lombardy and Venetia. The name ‘grana padano’, by contrast, is not mentioned in the Decree.

75 Clearly those areas all come within the area of production of both parmigiano reggiano (Parma, Reggio Emilia, Modena, Bologna west of the Reno and Mantua east of the Po) and grana padano (Piedmont, Lombardy, Emilia-Romagna, Venetia and the province of Trento).

76 Following the introduction of the first system of designations of origin in Italy by ... Decree of the President of the Republic No 1269 of 30 October 1955 on the recognition of designations relating to methods of production, characteristics of marketing and areas of production of cheeses, GURI No 295, 22 December 1955, p. 4401, which recognised the designation of origin ‘grana padano’, parmigiano reggiano cheese lost its classification as grana, on account of its specific characteristics, whilst all the other grana cheeses were recognised under the designation ‘padano’.

77 The fact that the Italian legislation of 1938 refers to different granas (parmigiano-reggiano, lodigiano, emiliano, lombardo and veneto), all produced in the area of the plain of the Po, without however mentioning grana padano, and also the fact that subsequent legislation introduced the name ‘grana padano’ whilst abandoning the earlier names indicates that grana is a cheese traditionally produced in numerous areas of the plain of the Po, which the Italian legislature therefore, at a certain point in time, identified by the term ‘padano’ so as to simplify the framework of rules and to include in one single name the various previous names, all originating in the Padanian Valley.

78 The qualifier ‘padano’ was therefore inserted not to restrict the scope of the PDO to certain granas only, but in order to place them all under the same increased protection, conferred initially by Italian legislation and subsequently by Regulation No 2081/92. It follows from this that the changes in the Italian legal context indicate that the name ‘grana’ is not generic".

7 comments:

Anonymous
said...

The Glaverbel decision raises some questions in my mind. I understand that the applicant provided evidence that the patterning was considered distinctive by professionals in ten of the (then) fifteen EU states but because evidence was not presented for all states, the Court decided against acquired distinctiveness. While this position would appear to be contrary to the statement in para. 37, i.e. "In the case of non-word marks it may be assumed that the assessment of their distinctiveness will be the same throughout the Community, unless there is concrete evidence to the contrary (Case T‑399/02 Eurocermex v OHIM (shape of a beer bottle) [2004] ECR II‑1391, paragraph 47, and shape of a sweet wrapper, cited in paragraph 32 above, paragraph 86)", how does this position tie in with EU expansion? An EU mark may have "acquired distinctiveness" in all old states but not the new states but on EU expansion, I presume the protection of the mark automatically extends to the new states where there is no acquired distincitveness. Why should an applicant not be entitled to the registration if the mark is distinctive in ten out of fifteen states, including all the larger ones.

I'd love to see the evidence of acquired distinctiveness in relation to this 'sign'. Assessing such evidence is one of the hardest tasks any registry can perform - especially when we are talking about an unconventional sign such as this.

I'm sure with such a sign you could get quite a number of 'professionals' willing to stand up and say, "yes that's distinctive" - but is it distinctive in a TM sense, and is it distinctive to the end user ??

Dear IPKat, despite being French, or because I am, I really enjoy English humour. I also enjoy reading your work. In response to your witticism on Case T-140/06 Philip Morris : i) Times are hard nowadays for smokers in France, just try to smoke in a restaurant in Paris and you'll see. ii) the reason why the decision is in French is probably simpler : the applicant is a company incorporated in Switzerland (in a French spoken part) who most probably has filed its trademark application in French, one of the 5 OAMI official language. Therefore the language of the proceedings has to be French.You'll find the same before the EPO, which has only 3 official languages (English, German, French), the language of the proceeding being the official language in which the patent application has been filed or translated.